* IN THE HIGH COURT OF DELHI AT NEW DELHI Date of Reserve: 17th November, 2009 Date of Order: 4th December, 2009 IA No. 10778/2007 in CS(OS) No. 1300/2007 % 4.12.2009 M/s S.K.Industries Pvt. Ltd. ... Plaintiff Through: Mr. Chandra Shekhar Yadav, Advocate Versus Mr. Dipak Ghosh @ Mana Da Trading ... Defendant Through: Mr. Ajay Sahni, Advocate JUSTICE SHIV NARAYAN DHINGRA 1. Whether reporters of local papers may be allowed to see the judgment? Yes. 2. To be referred to the reporter or not? Yes. 3. Whether judgment should be reported in Digest? Yes. ORDER
This application has been made by the defendant under Order 39 Rule 4 CPC for vacating the ad interim ex parte injunction granted on 20.7.2007 by this Court to the plaintiff. The plaintiff had approached the Court with the allegations that the defendant was using the mark 'OK Super Star' written prominently in the same style in which plaintiff was using its mark 'Mahak' and 'Mahak Star'. This Court considered that the mark 'Star' was similarly printed in the similar font and manner in which plaintiff printed its mark and granted an ex parte interim injunction preventing defendant from infringing trade mark of the plaintiff. This Court also appointed Local Commissioner on another application made by the plaintiff under Order 26 of CPC vide order dated 27.7.2007 directing Local Commissioner to visit the various premises of the defendant and to seize the infringing articles. The report of the Local Commissioner shows that no infringing article was seized from the place of IA No. 10778/2007 in CS(OS) No. 1300/2007 Page 1 of 3 the defendant. The defendant has taken various pleas for vacating the order including the plea of jurisdiction. However, this Court is presently not concerned with the jurisdiction of this Court. The defendant has taken stand that after learning that 'Star' was one of the trademarks of plaintiff, it had discontinued the use of word 'Star' from its product long back and before filing of suit. The defendant was now marketing its product under the name of 'Okay Jurassic Fruit Flavoured Cup Jelly'. The defendant has placed on record the advertisement material and other printed material showing that it was not using the trademark of plaintiff and it was using its own distinct trademark viz. 'Okay Jurassic'. I, therefore, consider that the injunction granted by this Court on 20.7.2007 regarding trademark would not affect the present trademark of the defendant viz. 'Okay Jurassic' and defendant is at liberty to use trademark 'Okay Jurassic'.
2. The plaintiff had also contended that it had a registered design in respect of cup in which jelly was being packed and marketed. The cup was of semi cylindrical shape with spherical bottom. A perusal of various cups being used by different manufactures of jelly, even prior to plaintiff coming into existence, shows that this design of the cup was a common design and was being used by different manufacturers much before the use of it by the plaintiff.
3. This Court in Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh & Ors. 2002(24) PT 449 (Del.) had observed that where the design had been published earlier the ground of defence as mentioned in Section 19 of the Designs Act could be taken by the defendant pursuant to Sub Section 3 of Section 22 of the Designs Act and no injunction could be granted in view of the serious dispute as to the validity of the design. Similarly, this Court in Dabur India Ltd. v. Rajesh Kumar & Ors. 2008(37) PTC 227(Del.) had observed as under:
11. In cases of design, the Court while granting interim injunction must keep in mind that the design IA No. 10778/2007 in CS(OS) No. 1300/2007 Page 2 of 3 must be validly registered and there must be some novelty and originality in the designs sought to be protected and it must not have been re published. No specific novelty has been mentioned by the plaintiff in the design of the bottle, neither any specific novelty has been mentioned in the registration certificate. The registration certificate only gives bottom view, top view and side view of the bottle. There is no specific dimensional ratio of the bottle given in the design as bottles are manufactured by most of the manufacturers for containing specific quantity of liquid by measurement. Normally these bottles are made 50 ml, 100 ml, 200 ml, etc.. Since all the manufacturers manufacture bottles for such quantities, the bottles of same quantity are bound to have almost same height if they have same bottom circumference. Unless, plaintiff had any claim over specific ratios of the dimensions which were not pre- existing, there can be no novelty in the bottle. Similar designs are being used by many leading companies from the time much before the registration of this design by the plaintiff. I, therefore, consider that the plaintiff is not entitled for interim injunction. The application of the plaintiff is hereby dismissed.
4. In the present case, the cup being used by the defendant and plaintiff is common cup, in use of most of the manufacturers of jelly even prior to its registration in favour of plaintiff. The registration of the design of the cup by the Registrar does not show any application of mind nor does it show any novelty of design. The shape is a well known geometrical shape. There is no originality either in the shape or in the dimensions. I, therefore consider that the defendant is entitled to use the cup which it is using. The application is disposed of in above terms.
CS(OS) No. 1300/2007 List before the Joint Registrar on 9th February, 2010.
December 04, 2009 SHIV NARAYAN DHINGRA, J. vn IA No. 10778/2007 in CS(OS) No. 1300/2007 Page 3 of 3